Ex parte FITE

Board of Patent Appeals and Interferences

Feb 25, 2000

08758788 (B.P.A.I. Feb. 25, 2000)

See the amendment filed August 26, 1998 (Paper No. 11).1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN FITE
____________
Appeal No. 1999-1979
Application No. 08/758,788
____________
HEARD: February 07, 2000
____________
Before COHEN, MCQUADE, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 1, 6, 20, 26, 28 and 29, as amended subsequent to
the final rejection. Claims 10, 11, 13, 25 and 27 have been1
Appeal No. 1999-1979
Application No. 08/758,788
2
allowed. Claims 2 through 5, 7 through 9, 12, 14 through 19
and 21 through 24 have been canceled.
We AFFIRM.
The appellant’s invention relates to a golf putter with
adjustable characteristics. A more complete understanding of
the invention can be derived from a reading of exemplary claim
1, which appears on page 14 of the brief (Paper No. 15).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kenon 3,848,737 Nov. 19,
1974
Ebbing 4,121,832 Oct. 24,
1978
Huggins et al. 4,156,526 May
29, 1979
(Huggins)
Tucker, Sr. 5,332,214 Jul. 26,
1994
(Tucker)
Fisher 5,458,332 Oct. 17,
1995
Sturm 5,690,562 Nov. 25,
1997
(filed Sep. 3,
1996)
The following rejections are before us for review:
(I) claims 1 and 20 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Fisher;
Appeal No. 1999-1979
Application No. 08/758,788
Fisher was included in the answer as evidence to support the § 1032
rejection of claim 29 in response to the language inserted into the claim by
Paper No. 11 (answer, pages 3 and 4).
3
(II) claim 6 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fisher;
(III) claim 26 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fisher in view of Kenon;
(IV) claim 28 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fisher in view of Ebbing, Huggins,
Tucker and Sturm; and
(V) claim 29 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Huggins in view of Fisher.2
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 16) for
the examiner's complete reasoning in support of the
rejections, and to the brief (Paper No. 15) for the
appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
Appeal No. 1999-1979
Application No. 08/758,788
4
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determination which follows.
Rejection (I)
Initially, we note that appellant has indicated that
claims 1 and 20 stand or fall together (brief, page 5).
Accordingly, with respect to Rejection (I), we select
independent claim 1 for
review and claim 20 will stand or fall with claim 1. 37 CFR
§ 1.192(c)(7).
Fisher discloses a golf putter 10 having a head 12, a
shaft 14 received in a recess 18 formed in the upper surface
20 of putter head 12 (Fig. 2). Head 12 includes a forward
face 24 having a rectangular recess 22. A flexible
polyurethane pad or insert 26 having a golf ball impacting
forward surface 28 is mounted or installed in recess 22. Pad
26 is constructed from solid polyurethane having a hardness
that is selected according to a golfer's preference. To
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Application No. 08/758,788
5
adjust for different putting distances, different pads of the
same hardness provide a decrease in rebound by energy
absorption between club head 12 and ball 50 of substantially
less than 100% of an ideally "live" standard, and preferably
in the range of 12.5% to 50.0% of the ideal. For example, a
rebound factor of about 12.5% may be provided for a short
putt, a rebound factor of about 25% may be provided for a
medium putt, and a rebound factor of about 50% may be provided
for a long putt.
At col. 5, lines 6 through 13, Fisher teaches that
[d]epending upon the distance of the golf ball from
the cup (not shown) and the degree of control and
feel required to sink the putt, the golfer can
preselect a pad 26 from a set of pads to be inserted
in a putter 10, (or, from a multi-putter set of
putters embodying
the present invention, may select a putter) for,
say, a 12.5%, 25%, 37.5%, or 50.0% rebound factor.
In either case, the pads 26 may be color coded for
ease of identifying the pad to the distance.
(Emphasis added)
Claim 1 calls for a golf club for putting comprising a
putter body having a shaft connection region and a ball
Appeal No. 1999-1979
Application No. 08/758,788
6
striking surface with a recess, a shaft secured to the putter
body, and
a ball striking insert fabricated from a
material selected from the group consisting of
titanium, graphite, PTFE, copper, brass, nylon,
resinous plastic material, polycarbonate resin,
aluminum and steel, said ball striking insert
detachably mounted in said recess, said insert
having length, width and depth dimensions closely
matching said recess so as to form a ball striking
face substantially coplanar with said ball striking
surface, whereby the putting characteristics of said
golf club can be varied by using ball striking
inserts of different weight, texture and hardness.
It is the examiner’s position that the polyurethane pad
disclosed by Fisher is “a ball striking insert fabricated from
. . . resinous plastic material” (answer, page 3). As to the
“whereby” clause of claim 1, the examiner has determined that
the putting characteristics of the golf club disclosed by
Fisher can also be varied by using inserts of different
weight, texture and hardness. The examiner points out that
claim 1 does not require
a plurality of inserts having different weight, texture and
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Application No. 08/758,788
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hardness, only that if such inserts are used, the putting
characteristics of the golf club can be varied (id. at 7).
Anticipation is established only if each and every
element set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Appellant does not argue that polyurethane is not a
resinous plastic material. Rather, appellant argues that
since Fisher discloses a putter in which all of the pads are
constructed from polyurethane, Fisher fails to disclose: (1) a
Appeal No. 1999-1979
Application No. 08/758,788
8
golf club in which the insert is constructed from one of a
group of materials having varying hardness; (2) pads
constructed from titanium, graphite, PTFE, copper, brass,
nylon, resinous plastic
material, polycarbonate resin, aluminum or steel; and (3) pads
having different weights or textures (brief, pages 6 and 7).
Like the examiner, we are not persuaded by appellant’s
arguments. Claim 1 does not require a plurality of pads
fabricated from different materials or having different
weight, texture or varying hardness. Rather, claim 1 requires
a ball striking insert fabricated from a material selected
from a group of materials which includes resinous plastic
material. Appellant would have us read into claim 1
limitations which are contrary to the plain words of the
claim, something that we simply cannot do. See In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Thus, we will not read claim 1 as requiring a plurality of
ball striking inserts fabricated from different materials
having different weight, texture and hardness.
Appeal No. 1999-1979
Application No. 08/758,788
9
Appellant has not explained, nor is it evident, why the
putting characteristics of the golf club disclosed by Fisher
would not be varied, if the club were used with inserts of
different weight, texture and hardness. Thus, the examiner’s
determination that Fisher discloses, expressly or under
principles of inherency, each and every element of the
invention recited in claim 1 is well taken.
Therefore, we will sustain the standing 35 U.S.C. §
102(b) rejection of claim 1 as being anticipated by Fisher.
It follows, based on appellant’s grouping of claims 1 and 20,
supra, that the standing 35 U.S.C. § 102(b) rejection of claim
20 will also be sustained.
Rejection (II)
Claim 6 is dependent on claim 1 and further requires that
the recess and the ball striking insert both have chamfered
corner portions.
Appellant does not contest the examiner’s determination
that putting chamfered corner portions on the insert taught by
Fisher would have been an obvious matter of design choice.
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Application No. 08/758,788
10
Rather, appellant argues that Fisher does not teach, suggest
or disclose a golf club in which the insert is constructed
from one of a group of materials having varying hardness or
pads constructed from a group of materials having different
weights or textures
(brief, pages 7 and 8). For the reasons set forth, above, in
our discussion of the rejection of claim 1, we find
appellant’s arguments equally unpersuasive with respect to the
rejection of claim 6.
Therefore, we will sustain the rejection of claim 6 under
35 U.S.C. § 103 as being unpatentable over Fisher.
Rejections (III), (IV) and (V)
With respect to each of the standing 35 U.S.C. § 103
rejections of claim 26 over Fisher in view of Kenon, claim 28
over Fisher in view of Ebbing, Huggins, Tucker and Sturm, and
claim 29 over Huggins in view of Fisher, appellant again
argues that Fisher does not teach, suggest or disclose a golf
club in which the insert is constructed from one of a group of
Appeal No. 1999-1979
Application No. 08/758,788
11
materials having varying hardness or pads constructed from a
group of materials having different weights or textures
(brief, pages 8 and 9).
Claim 26 does call for “a plurality of ball striking
inserts,” but does not require that the inserts be constructed
from different materials or have different hardness, weight or
texture as appellant seems to suggest. Rather, claim 26
requires
that each insert be “fabricated from a material selected from
the group consisting of titanium, graphite, PTFE, copper,
brass, nylon, resinous plastic material, polycarbonate resin,
aluminum and steel.”
Fisher teaches a set of golf putter inserts with each
insert being constructed of polyurethane, a resinous plastic
material,
and having the same hardness and a different rebound factor.
Thus, the limitation of claim 26 that each insert is
“fabricated from a material selected from the group consisting
of titanium, graphite, PTFE, copper, brass, nylon, resinous
plastic material, polycarbonate resin, aluminum and steel” can
Appeal No. 1999-1979
Application No. 08/758,788
12
be read literally on the set of inserts taught by Fisher.
Claim 28, like claim 1, calls for
a ball striking insert fabricated from a material
selected from the group consisting of titanium,
graphite, PTFE, copper, brass, nylon, resinous
plastic material, polycarbonate resin, aluminum and
steel, said ball striking insert detachably mounted
in said recess, said insert having length, width and
depth dimensions closely matching said recess so as
to form a ball striking face substantially coplanar
with said ball striking surface, whereby the putting
characteristics of said golf club can be varied by
using ball striking inserts of different weight,
texture and hardness.
Claim 29 calls for a ball striking insert having a ball
striking face fabricated from a material selected from the
group
consisting of titanium, graphite, PTFE, copper, brass, nylon,
resinous plastic material, polycarbonate resin, aluminum and
steel.
Thus, the features which appellant argues are lacking in
Fisher are not found in either of claims 28 or 29.
Accordingly, we are constrained to sustain the standing 35
U.S.C. § 103 rejections of claims 26, 28 and 29.
Appeal No. 1999-1979
Application No. 08/758,788
13
The examiner’s decision rejecting appealed claims 1, 6,
20, 26, 28 and 29 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1999-1979
Application No. 08/758,788
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Thomas F. Smegal, Jr.
Knobbe, Martens, Olson & Bear, L.L.P.
620 Newport Center Drive
16th Floor
Newport Beach, CA 92660